itlawwikiaorg-20200214-history
Domain name
Introduction The Internet is an enormous repository of information, contained on individual web pages, organized into websites. To locate a specific web page requires the use of an Internet Protocol number, which is like a telephone number or street address, to locate a particular page of information. These numbers consist of four groups of digits separated by periods (e.g., “192.215.247.50”). Because it would be extremely difficult for users to remember these sequences of numbers, the Domain Name System was developed to make it easier for users to locate web-based information. Each domain name consist of a unique string of characters (letters, numbers and certain symbols), arranged so that reading from right to left, each part of the name points to a more localized area of the Internet. For example, in the domain name “iii.org.tw,” the “.tw” is the country code,The only country in which a country code is not required is the United States. A domain name without a country code will be assumed to have the ‘.us’ country code. which means that the domain name is located on a computer in Taiwan, the “.org” is known as the top-level domain, reserved for educational institutions, while the “iii” specifies a second-level domain, a website owned by the Information Industry Institute. In some domain names, there may be additional strings of characters to the left of the second-level domain name, more narrowly defining the precise website sought. If a user knows or can deduce the domain name associated with a website, the user can directly access the website by typing the domain name into a web browser, without having to conduct a time-consuming search. Because users often try to “guess” the domain name to avoid searching for the website, having an easy-to-remember domain name is a distinct advantage. Otherwise, the user may have to engage in a length search to locate the desired web site. Distinction Between Trademarks and Domain Names There are several important distinctions between domain names and trademarks which should be noted. * A domain name can be registered only if the identical domain name is not current registered to another; a trademark may be registered to multiple claimants, as long as there is no likelihood of confusion between them. * Domain name registrars only reject identically spelled domain names; no attempt is made to determine whether two domain names which are not spelled alike may be likely to cause confusion because of how they are pronounced, have identical meanings in different languages, or otherwise would be rejected by a trademark examiner. * A domain name has global usage and there can only be one user of a specific domain name in the world; trademark protection is national in scope, and different entities may own the same trademark in different countries. * Registration of a term as a domain name does not necessarily give the registrant trademark rights in the term. * Generic and descriptive marks may not be protectable as trademarks, but can be used as domain names. Domain Name Litigation During this time, there were a large number of lawsuits filed in the United States, with smaller numbers filed in Australia, Canada, England, France and Germany, over the right to use a particular domain name. They generally fell within one or more of the following categories: * Competitors. There were a number of cases in which a commercial or political organization adopted a competitor’s trademark or trade name as its domain name – either to confuse users looking for the legitimate trademark owner or to embarrass the competitor. Courts had little problem in finding such uses to be infringing.See, e.g., Planned Parenthood Federation v. Bucci, 42 U.S.P.Q.2d (BNA) 1430 (S.D.N.Y. 1997); MTV Networks v. Curry, 867 F. Supp. 202 (S.D.N.Y. 1994). * Free riders. Some companies chose a domain name in an effort to play off of a famous mark. Courts also had little problem enjoining such uses.See, e.g., Playboy Enters. v. Calvin Design Label, 985 F. Supp. 1218 (N.D. Cal. 1997); Toys ‘R Us, Inc. v. Akkaoui, 40 U.S.P.Q.2d (BNA) (N.D. Cal. 1996). * Cybersquatters. A number of individuals and organizations registered large numbers of trademarks as domain names with the expectation that they would be able to sell the domain names back to the trademark owners at a considerable profit. While some companies were willing to purchase the domain names, others went to court. Judges were not sympathetic to cybersquatter’s claims, and in most of the reported cases, the cybersquatter lost.See, e.g., Panavision Int'l L.P. v. Toeppen, 945 F. Supp. 1296 (C.D. Cal. 1996), aff'd, 141 F.3d 1316 (9th Cir. 1998). Cybersquatters have been held to violate trademark laws, even if the defendant did not use the domain name, but merely reserved it. * Legitimate users. Companies in disparate industries can legally use and register identical marks without confusion (e.g., Delta Airlines, Delta Faucets, Delta Dental). However, when those companies go online, there may be confusion, since only one company can own a particular domain name (e.g., www.delta.com). Cases in this category must be decided by applying traditional trademark doctrines.See, e.g., Interstellar Starship Services v. Epix, Inc., 983 F. Supp. 1331 (D. Or. 1997). There are several possible claims that can be made in a domain name dispute. The most common under U.S. law are: federal trademark infringement, federal unfair competition, federal trademark dilution, and the Anticybersquatting Consumer Protection Act. * Federal trademark infringement. Owners of federally registered trademarks can bring an action against a domain name holder if the use of the domain name is “likely to cause confusion” regarding the source of commercial goods or services.15 U.S.C. §1114. To determine likelihood of confusion, the court looks at eight factors: (1) the similarity of the two marks in appearance, sound, and meaning; (2) the strength of the owner’s mark; (3) the similarity of the products or services on which the marks appear; (4) the similarity of the marketing methods and distribution channels; (5) the sophistication of the target audience; (6) the existence of actual confusion; (7) the intent of the infringer; and (8) the likelihood that the parties will expand their line of goods or services into similar markets. A number of court decisions have found a likelihood of confusion, either enjoining the defendant’s use of the domain name or even ordering the domain name be assigned to the plaintiff.See, e.g., Cardservice Int’l v. McGee, 950 F. Supp. 737 (E.D. Va. 1997); Planned Parenthood Federation v. Bucci, 42 U.S.P.Q.2d (BNA) 1430 (S.D.N.Y. 1997); Playboy Enterprises v. Calvin Design Label, 985 F. Supp. 1218 (N.D. Cal. 1997). Cases in which there was a finding of no likelihood of confusion include: Maritz, Inc. v. Cybergold, Inc., 947 F. Supp. 1338 (E.D. Mo. 1996) (“goldmail.com” and “cybergold.com”); Interstellar Starship Services v. Epix, Inc., 983 F. Supp. 1331 (D. Or. 1997) (“epix.com” and “EPIX” on different services). * Federal unfair competition. Owners of registered or unregistered trademarks can bring a claim under Section 43(a) of the Lanham Act if the use of the mark is likely to cause confusion as to the source of the goods or services, of if it misrepresents the nature or quality of the goods or services.15 U.S.C. §1125(a). * Federal trademark dilution claim. The Federal Trademark Dilution Act provides remedies for dilution of [[famous mark]]s.15 U.S.C. §1125©. The owner of a famous mark can pursue a claim if there has been a blurring Blurring occurs “when a defendant uses a plaintiff's trademark to identify the defendant's goods or services, creating the possibility that the mark will lose its ability to serve as a unique identifier of the plaintiff's product.” ''Panavision Int'l, L.P. v. Toeppen'', 141 F.3d 1316, 1326 n.7 (9th Cir. 1998). or tarnishmentTarnishment occurs “when a famous mark is improperly associated with an inferior or offensive product or service." '' Id.'' of the mark. It is not necessary to show likelihood of confusion. This claim has been extremely useful in domain name disputes.See, e.g., Hasbro, Inc. v. Internet Entertainment Group, Ltd., 40 U.S.P.Q.2d (BNA) 1479 (W.D. Wa. 1996); Toys ‘R Us, Inc. v. Akkaoui, 40 U.S.P.Q.2d (BNA) (N.D. Cal. 1996); Intermatic Inc. v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996). References Category:Domain Name Category:Trademark